This is part of a series of articles discussing recent orders of interest issued in patent cases by the United States District Court for the District of Massachusetts.
In Maquet Cardiovascular LLC v. Abiomed, Inc., No. 1:17-cv-12311-FDS, Judge Saylor granted-in-part and denied-in-part Plaintiff’s motion for partial summary judgment on Defendant’s affirmative defense of prosecution laches.
This is the second lawsuit between the parties involving intravascular blood pumps, and one asserted claim recited a “pigtail shaped distal tip.” The pigtail feature was originally described in an earlier patent application that was incorporated by reference into a PCT application but was never directly mentioned in the PCT application itself or in any of the continuation applications that followed over the next 15 years. The earlier application was later abandoned and never published. Plaintiff amended a then-pending continuation to claim the pigtail only after litigation with Defendant had begun.
The Court explained that laches is an equitable affirmative defense, requiring that “(1) the patentee’s delay in prosecution [was] unreasonable and inexcusable under the totality of circumstances and (2) the accused infringer [] suffered prejudice attributable to the delay.” The latter element requires a showing that “the accused infringer or others invested in, worked on, or used the claimed technology during the period of delay.”
As to asserted claims that did not recite the pigtail, the Court granted summary judgment of no laches after finding that Defendant offered no evidence supporting its laches defense. As to the pigtail claim, the Court found genuine issues of material fact on both elements of prosecution laches.
On unreasonable delay, the Court found the PCT application’s incorporation by reference to be ambiguous. The PCT application disclosed “guidability features” but specifically identified only “side lumens” and “deformable materials,” without mentioning a pigtail tip. Moreover, the abandoned application was not available on the USPTO’s website and could only be obtained by written request and payment of a fee, which barriers Defendant’s expert opined would prevent a party conducting a reasonable due diligence review from viewing the abandoned application. The Court thus found that a reasonable factfinder could conclude that Plaintiff did not disclose the pigtail when the PCT application was published. The Court noted other factors favoring Plaintiff, including that continuation practice is permitted by statute, that the incorporation by reference complied with PTO rules and was found consistent with case law and administrative guidance in an earlier order, and that it is generally not improper for an applicant to broaden claims during prosecution to encompass a competitor’s products so long as the disclosure supports the broadened claims. Nevertheless, the Court cautioned that statutory compliance alone is not sufficient to avoid prosecution laches, and that Plaintiff’s awareness of Defendant’s investment in the pigtail technology during the delay period, if proven, must be given weight.
On prejudice, there was no dispute that Defendant had invested in, worked on, and used the accused pigtail technology during the relevant period. The Court held that whether those investments constituted unfair prejudice depended largely on whether Defendant knew or reasonably should have known of Plaintiff’s claim to the feature when making those investments and distinguished a recent Federal Circuit decision, Google LLC v. Sonos, Inc., where the accused infringer could not show prejudice because the relevant subject matter was fully described in a published specification. The Court noted circumstantial evidence favoring Plaintiff, including that the first named inventor of both the abandoned application and the PCT application later became a consultant for Defendant, and that Defendant’s Chief Technology Officer had seen the PCT application when it was published but did not request a copy of the abandoned application referenced therein. Nevertheless, a genuine dispute remained as to whether the incorporation by reference gave Defendant reasonable notice.
Accordingly, the Court granted Plaintiff’s motion for partial summary judgment as to the claims that did not recite the pigtail, but denied the motion as to the pigtail claim, finding genuine disputes of material fact on both unreasonable delay and prejudice.
Also in Maquet Cardiovascular LLC v. Abiomed, Inc. et al., No. 1:17-cv-12311-FDS, Judge Saylor denied Defendant Abiomed’s motion for summary judgment of invalidity of claim 2 for lack of written description as moot and denied its motion for partial summary judgment of no infringement of claims 3 and 24 under the doctrine of equivalents due to alleged vitiation.
First, Plaintiff dropped claim 2 after Abiomed filed its motion and thus the Court denied the motion for summary judgement of invalidity of that claim as moot.
Second, the Court considered whether Plaintiff’s doctrine of equivalents theory improperly vitiated claim limitations, finding that genuine disputes of material fact remained. Claims 3 and 24 require a blood-pressure detection mechanism “comprising a fluid column” disposed within the catheter. The two accused products use a differential pressure sensor and an optical pressure sensor rather than the claimed fluid column. Plaintiff did not assert literal infringement, but argued that the substitute sensors were equivalent to the claimed fluid column under the doctrine of equivalents.
The Court agreed with Abiomed that Plaintiff could not claim equivalence to “any pressure-sensing structure,” as that would effectively vitiate the fluid-column limitation. However, the Court noted that Plaintiff’s assertion was limited to the specific differential and optical sensors used in the accused products rather than pressure sensors generally, and that its expert had offered a sufficient function-way-result analysis for both accused products. Although the Court acknowledged that the accused sensors operate on different physical phenomena than a fluid column—hydraulic pressure versus electrical signaling or optical reflection—whether those differences were insubstantial under the doctrine of equivalents could not be resolved on summary judgement, as the Court was required to accept Plaintiff’s expert’s assertions as true at that stage. The Court noted that while the doctrine of equivalents tends to reward poor draftsmanship and increase litigation risk, it was bound by precedent at this stage and concluded that Maquet had raised genuine disputes of material fact on equivalence that must be resolved at trial.
In Solos Tech. Ltd. v. Meta Platforms, Inc., No. 26‑cv‑10304‑ADB, Judge Burroughs denied Plaintiff’s motion to disqualify defense counsel Morgan Lewis & Bockius LLP.
The motion arose from Morgan Lewis’s 2019 representation of Kopin Corporation. That year, Solos acquired certain smart eyewear technology and related intellectual property from Kopin, along with an ownership interest in the company. During the transaction, Morgan Lewis advised Kopin on corporate law matters and attended board meetings and meetings with Kopin’s then-Chairman and CEO, Dr. John C. C. Fan, where intellectual property issues were discussed. Dr. Fan now serves as Solos’ Executive Chairman. Morgan Lewis did not, however, advise Kopin on IP issues.
Solos argued that Morgan Lewis should be disqualified as defense counsel under Mass. R. Prof. C. 1.9 because (1) Morgan Lewis’s prior representation of Kopin was “substantially related” to this litigation; and (2) Morgan Lewis owed confidentiality obligations to Solos as Solos was a business division within Kopin, Morgan Lewis’s client, before the spin-off. Morgan Lewis argued that Solos was never a client and that there is no substantial relationship between its work for Kopin in 2019 and the present litigation.
Massachusetts Rule of Professional Conduct 1.9 forbids “[a] lawyer who has formerly represented a client in a matter” from “represent[ing] another person in the same or a substantially related matter in which that person’s interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing.” Under this rule, Solos must show (1) there was an attorney-client relationship between Solos and Morgan Lewis, and (2) that “the former and current representations are both adverse and substantially related.” (Emphasis added).
The Court first found that there was no attorney-client relationship between Morgan Lewis and Solos based on Morgan Lewis’s 2019 representation of Kopin. More specifically, the Court found that the assignment of patent rights did not transfer the attorney-client relationship from Kopin to Solos, and neither did Kopin’s current minority ownership interest in Solos transform Solos into Morgan Lewis’s client for purposes of Mass. R. Prof. C. 1.9.
The Court further found that even if an attorney-client relationship existed between Morgan Lewis and Solos, there is no substantial relationship between any former representation by Morgan Lewis of Solos and its current representation of the Defendants. More specifically, the Court found that Morgan Lewis’ advice on discreet issues of corporate law in2019 was entirely unrelated to the issues in the instant patent-infringement dispute, and therefore, not substantially related to the instant patent-infringement matter.
The Court also found that Solos had failed to establish that Morgan Lewis gained access to any confidential information that could be used against Solos beyond that already independently discoverable in this litigation.
Accordingly, the Court denied Plaintiff’s Motion to disqualify Morgan Lewis from serving as defense counsel.
In InMode LTD. v. BTL Industries, Inc., No. 24-cv-12955-PBS, Judge Saris denied Plaintiff InMode Ltd.’s motion to dismiss a counterclaim and affirmative defense alleging inequitable conduct for an alleged failure to plead “the specific who, what, when, where, and how” with particularity.
The Court found that the Defendants’ counterclaim pled with particularity that a prosecuting attorney, “Dr. Shoop,” allegedly withheld material information regarding another patent over which he held power of attorney from the Patent Office along with a date range for the alleged conduct, satisfying the “who” and “when” requirements.
To satisfy the “what” and “where” requirements, the Court explained that the pleader must identify which claims, and which limitations in those claims, the withheld references are relevant to and where in those references the material information is found. The Defendants cited specific information found in the allegedly-withheld patent that allegedly would have been material to the PTO in considering specific elements of the asserted patent’s independent claims, satisfying these requirements.
To satisfy the “why” and “how” requirements, the Court explained that the pleader must specify what limitations “are supposedly absent from the information of record” and how “an examiner would have used this information in assessing the patentability of the claims.” Defendants argued that the Examiner believed the prior art then of record did not disclose a particular claimed application that is taught by the allegedly-withheld patent, and that admission of the reference would have changed the outcome of the PTO’s decision whether to issue the asserted patent.
Because Dr. Shoop had power of attorney over the allegedly-withheld patent, the Court found that it could reasonably infer that he had knowledge of its contents and that, in combination with additional evidence, by withholding the reference he intended to deceive the Patent Office.
Accordingly, the Court denied Plaintiff’s motion to dismiss, concluding that the defendant’s counterclaim pled with particularity the facts necessary for the Rule 9(b) pleading requirement.
*Michael Christie is a Summer Associate at Finnegan.
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